FACULTY OF LAW,

JAMIA MILLIA ISLAMIA

INTELLECTUAL PROPERTY RIGHTS

PROJECT

TOPIC: RIGHTS OF USER OF TRADEMARK

Project submitted to Project submitted by:

Ms. SHABANA SHABNAM AAMIN BINT KHURSHID(Roll No. 1)

ANHA RIZVI(Roll No. 12)

Sem. VII(S/F)

CONTENTS
ACKNOWLEDGEMENT....................................................................................3

INTRODUCTION................................................................................................4

POSITIVE RIGHT…………………………………………...………..………..4

NEGATIVE RIGHT ………………………………….…………………….5-10

RELEVANT ARTICLES……………………………………..……………10-11

REMEDIES……………………………………….……………………..…11-13

BIBLIOGRAPHY..............................................................................................28

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 ACKNOWLEDGEMENT
Gratefulness is the noble response of one’s soul to kindness or help generously rendered by
another and its acknowledgment is an obligation and joy. So it is that we express whole
heartedly to those who have made the creation of this project possible.

First of all we thank the almighty, Lord on whom we believe and depend on. Our each and
every achievement is nothing but the showers of blessing He gives us.

We also thank Ms.ShabanaShabnamfor selecting us to work on this project and guiding us

throughout. We are extremely grateful to all our friends and well-wishers who had helped in
the completion of this project. Last but never the least, we extend our wholehearted
thankfulness to the librarians & and the office staff.

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 INTRODUCTION
Trademarks are not modernity as they existed in the ancient world too. In fact even in the
times when people either prepared themselves for what they needed or, more often, acquired
the same from the local craftsmen, there were already a plenty of creative entrepreneurs who
sold their goods beyond their localities and sometimes even over considerable distances. If
we talk about 3,000 years ago, the Indian craftsmen were involved themselves engraving
their signatures on the artistic designs before sending them to countries like Iran. There had
been manufacturers from China who vended goods bearing their signs in the Mediterranean
region over 2,000 years ago and at one time about a variety of Roman marks of pottery were
in use, which included the brand FORTIS, which at that time became so renowned that it was
copied and counterfeited. With the trade prospering in the era of the Middle Ages, the usage
of marks to distinguish the goods of mercantile nature and manufacturing nature likewise
expanded several centuries ago.

REQUIREMENT FOR LEGAL PROTECTION

Broadly, "A trademark is any type of sign that personalizes the goods of a given enterprise
and sets them distinguished from the goods of their competitors."

A consumer who has been cuckoldedmay often not realize that the goods that has been
purchased is not of the origin specified by the trademark, and that may lead to the deceived
consumer holding the owner of the genuine trademark accountable if the goods he expected
did not meet the standards to which he was accustomed. In order for trademarks toaccomplish
their distinguishing role for consumers who wish to make their choice among a variety of
goods of the same kind in the market, it is necessary for them to be legally protected. The
protection must be done in order to prevent thecompetitors from using the same or similar
signs for the identical goods which may confuse the consumer as to theauthentic origin of the
goods.Nevertheless, even if finally the buyerrealizesthat he has been misled and has bought
the somegoodsaccidently by the act of a trademark which was astonishinglyalike to the one
used for the merchandise that he actually supposed to buy, it would not be feasible for him to
take action against the violator of the authentic trademark. It is thusessentially recognised
everywhere that the proprietor of a protected trademark must have the right to stopother
manufacturers/sellers from using duplicate or confusingly similar trademarks for

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productsalike or similar to those for which he uses his own trademark. This is what is called
an exclusive right of the owner of the trademark.

THE RIGHT TO USE THE TRADEMARK

This right is also known as the positive right of the owner. It belongs to the trademark holder
as he is acknowledged in most trademark laws. It would not be fair to not grant such a right
of use while imposing an obligation to use. The right of use of the trademark can be subjected
to other rights and laws, as is any other right provided by law. It is possible that whatever is
allowed under the Trademark Law may be proscribed under the Competition Law or by any
public enactment.

What do we mean by the ‘Right of Use’? It evidently means the right of ownerof such
distinguished sign to put it on his goods, labels, packaging, containers, etc. or to use it in any
other way in relation to the products as he deems fit for which it is registered.

It also means to saythe right to introduce the goods for its marketing under the trademark. It
is necessaryto distinguish between these two rights as both find its derivation from the right
to use a trademark. When the holder of the trademark has launched some goodsfor its
marketing under his distinguishedmark, he cannot object to further sales of the product in the
course of trade. This is the kernel of the principle of exhaustion of the trademark right. There
are a fewcountries thatdo not permit objections to parallel imports of products sold or bought
in aother countries by the trademark holder or by the consent of a third party. Then there are
some other countries which do agreeto such imports to be objected to, that is to say by
applying the principle of territoriality of rights.

Although it is a principle that only applies to the right to launch the goods bearing the
trademark for the sale in the market for the very first time. The owner has the right of
exclusivity to attach the trademark on the products and their packaging, containers, labels,
etc. continues to exist. Changing anygoods and selling it under the same sign has the similar
effect as putting the mark to products, i.e., it gives the consumer falls under the impression
that the actualgoods have been marketed by the trademark owner under his sign. If that is not
correct, the trademark owner has a right of intervention. Lastly, a third right out of the cluster
of rights provided in the right to use a trademark is- theright of trademark owner to use his
mark or sign in advertising, on papers of, documentary assets, etc.

THE RIGHT TO PREVENT OTHERS FROM USING THE TRADEMARK

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It follows from the trade mark's basic role of individualising the goods of its actual owner
from those of other persons that he must be able to object to the use of puzzlingly similar
signs or marks in order to exclude consumers and the public at largefrom being misled. This
is the core of the exclusive right given to the trademark owner by registration. The right must
enable him to object to any use of his trademark by a third party for goods for which it is
safeguarded, to the putting of the mark on such goods, to its use in relation to the products
and to the offering of the goods for marketing under the sign or mark, or the use of the mark
in advertising, business documents or any other kind of documentary assets. Moreover, since
consumers are to be sheltered against mix-up, protection generally ranges to the use of
comparable trademarks for goods of similar nature, if such use is likely to put the consumers
in confusion.

Depending on how the procedure works in the country, the trademark holder may rely on
those recognized rights for goods for which the mark is registered but not used, but he could
experience a retaliation leading to partial cancellation of his trademark for non-use.

The rights of exclusivity by the trademark owner can be used by means of an infringement
action. The trademark is violateddue to the use of acomparable or identical mark for goods od
similar nature, there is a stake or a likelihood of the people at largegetting misled. The test to
be applied for the infringement action is tapered than in an procedure of administrative nature
(examination ex-officio, opposition procedure). The test is not a hypothesis, but requires in
dealing with the reality of infringement of the mark in the market. Resultantly, the court has
to ponder how the violator is actually using the trademark, and the magnitude of use of the
infringed sign may also be useful. A number of laws not only provide for anlegal action of
infringement, but offer an administrative opposition procedure as well against an application
for the registration of identical trademark. In that situation, the test is not narrow, because the
grant has to be given for the risk of confusion that could arise from any use that the
complainant may possibly make of his trademark if it were registered. The test in fact is very
similar as is applied by the office in its examination for prior third-party rights,

Though, there are more justifications for applying such a broader test in opposition
procedures, since it is the right holder who objects to the application and therefore reflects his
interest in defending his right against the registration of a seemingly alike trademark.
Together with the question whether a trademark is capable to be distinguished and the
question whether a trademark is confusingly similar to prior right is one of the keystones of

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practical trademark safeguard. After having discussed in detail with the problems of
distinctiveness we shall now delve into the details of the concept of similarity:

Similarity of goods

As has been mentioned before trademarks are registered for goods in certain categories which
have been made for purposes of purely administrative nature. The categorization of products
and goods cannot thus be firm for the question of similarity. Sometimes totally incomparable
goods are classified in the same category (for instance personal computers, glasses, fire
extinguishers and phones).

The test of whether goods are of a similar nature is based on the theory that matchingmarks
are used. Even the same marks are not likely to build the confusion as to the derivationor
origin of the goods from inception if the goods are not very similar or very distinguishable.
As a broadprincipleis goods are similar if, when offered for sale under an identical mark, the
consuming public would tend to believe that they came from the same basis. All the
circumstances of the situation must be taken into account, including the type and nature of the
products and goods, the reason for which they are used and the trade channels through which
they are sold and bought, but especially the usual inception of the goods, and the usual point
of sale. As far as the latter condition is concerned, the difficulty is that in modern drugstores
supermarkets and department stores, product of every type are sold together, so the usual
point of sale is not so relevant or rather irrelevant to whether consumers consider goods as
coming from the same source as their usual origin. Still, the condition does remain valid in
many instances where goods are exclusively orgenerally sold in departmental shops. In such
situations, consumers may believe the origin of goods to be the same if they are both sold in
the same departmental stores, and may refuse that similarity of origin if they are not
commonly marketed in the same stores.

If dissimilar goods are all industrialised by enterprise of similar nature, or if consumers

expect them to be naturally manufactured by the same enterprise, they will usually be
regarded as having a common source. Another aspect is the composition, contents and nature
of goods. If they are broadly made of the same material, they will commonly be held to be
similar, even if they are used for diverse purposes. Raw and uncooked materials and finished
products manufactured out of the raw materials are not usually similar, anyhow, since they
are usually not sold and bought by the same enterprise. Subject to the different situations, one
or more of the aspects stated may determine the choice on whether goods are similar or not.

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Mostly, however, they will all have to be taken into consideration. The test, unquestionably,
is whether the marks are confusingly similar.

A trademark is confusingly alike to a prior mark if it is used for similar goods and so
diligentlyidentifies with the prior mark that there is a similarity of consumers being misled as
to the source of the goods. If the consumer is in a fix, the distinguishing role of the trademark
is not functioning, and the consumer may not to buy the goods that he wants. This is not
benefitting for the consumer, but also harmful for the trademark holder who loses the sale.
Non intention to confuse on the part of the infringer is essential, nor is actual confusion. The
rise of confusion is the test. That is the only way for the system to function. Of course,
phrases such as " likelihood of confusion of the consumer or public" have to be interpreted.
"The consumer" does not exist, and the public on the other hand cannot be confused.
Confusion is created, or is likely to be created, always in a section of the public. It has to be
determined in the each and every case what the relevant part of the public is that requires to
be considered, in other words who are actually reached or accessed to be addressed by the
trademark.

Since it is a problem to work in practice with the general definition of confusing similarity,
some principles have been established which define in specific cases whether, in view of the
similarity of the two marks, confusion is likely to arise. Since the average consumer generally
does not at first glance recognize differences between the marks that he spots if he took his
time to study the mark and the product offered under it more cautiously, the first impression
that he gains must be decisive. This is specifically true for mass-consumption products
offered in self-service stores. Furthermore, uneducated and unaware consumers and also
small children are more likely to be confused. The buyer of an expensive machine, car or
aircraft will doubtlessly be more cautious than the consumer in the self-service store. In those
areas, thus, very similar trademarks do exist in unison, which would probably be easily
confused if applied to massconsumption goods. Another fascinatinginstance of how the class
of goods can affect the testing of confusing similarity is to be found in the field of
pharmaceuticals. Prescription drugs are usually sold to the consumer (on doctor’s
prescription) by educated pharmacists, who do not tend to be misled by relatively similar
brand names used for medicines for different signs, so the testing of similarity can be more
substantial. For drugs sold over the counter, the opposite is correct. In view of the possibly
serious effect for the not so educated consumer if he buys misrepresentedgoods, the testing of
similarity must be predominantlystringent.

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The second important point is when we are testing the alikeness of trademarks they should
be compared as a whole, and that more value should be afforded to similar elements which
may create the confusion, while dissimilarities are overlooked by the average consumer
should not be stressed. Anyhow this basic rule of distinguishing the trademarks as a whole
and not dividing them into fragments, the structure of the signs is vital. Common prefixes are
generally more crucial than the common suffixes; if two marks are too alike or same at the
offset, they are more often confused than if the similarity in the end. Long words with similar
or common beginnings are more often confused than short words with different initial letters.

The third important point is that highly marks that are distinctive(marks coined or arbitrarily
used) are more often to be confused than marks with associative meanings in relation to the
products for which they are registered. The same is correct if a mark contains a highly
distinctive part of the word mark or one of a number of words words forming the mark, and
that highly distinctive element is identically or duplicated by the infringing sign. If, on the
contrary, the common element of the two marks is expressive, the attention of consumer
tends to focus on the rest of the mark.

The fourth important point is that confusion can arise from similarity in the writing, the
pronunciation and in the meaning of the sign, and that similarity in one of those areas is
sufficient for infringement if it misleads the public. With regard to similarity in writing, the
graphic presentation of the trademark plays an important part. Similarity in pronunciation is
important because trademarks that are written differently may be pronounced in the same
way, and pronunciation counts in oral communication : even if similarity in writing is
avoided by the use of very different graphic presentations, this does not make any difference
when the two trademarks are compared orally.

Influence of use and non-use

The rise of confusion in regards of the trademark in the market place ranges from actual use
on similar goods. To put a restriction onconfusion, it is again crucial that the trademark
protection system allows the holder to oppose to an application for registration of a trademark
which is based on intention only to use the mark. Numerous laws also allow the party
defending the suit in infringement actions to acquire non-use of the trademark on which the
action is centred, and the actual holder of trade mark has to show the use of his mark in order
to succeed the action. If the trademark is being infringed and used, the extent of the use can
influence the test of confusing similarity. Widespread use upsurges the distinctiveness of the

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mark, and confusion with renowned signs or marks is more so likely even if the goods on
which the infringing mark is used are not so similar or if the alikeness of the marks is less
obvious.

Protection beyond the scope of confusing similarity

It could be well understood that the use of a mark similar to the renowned mark would do
unjustified injury to the business in relation to aclass of products, whereas the same use on
totally non similar products may not be against the interests of the registered trade mark
holder of the recognized mark. The decision has to be determined by all the instances of the
specific case, consisting the extent of standing of the mark, the kinds of goods for which it is
used by the violator, the way in which he presents his products and sale, and so on.

RELEVANT ARTICLES

Article16
Rights Conferred

1. The owner of a registered trademark shall have the exclusive right to prevent all third
parties not having the owner’s consent from using in the course of trade identical or similar
signs for goods or services which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood of confusion. In case of
the use of an identical sign for identical goods or services, a likelihood of confusion shall be
presumed. The rights described above shall not prejudice any existing prior rights, nor shall
they affect the possibility of Members making rights available on the basis of use.

2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In
determining whether a trademark is well-known, Members shall take account of the
knowledge of the trademark in the relevant sector of the public, including knowledge in the
Member concerned which has been obtained as a result of the promotion of the trademark.

3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or
services which are not similar to those in respect of which a trademark is registered, provided
that use of that trademark in relation to those goods or services would indicate a connection
between those goods or services and the owner of the registered trademark and provided that
the interests of the owner of the registered trademark are likely to be damaged by such use.

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Article17
Exceptions

  Members may provide limited exceptions to the rights conferred by a trademark, such as fair
use of descriptive terms, provided that such exceptions take account of the legitimate interests
of the owner of the trademark and of third parties.

Article18
Term of Protection

  Initial registration, and each renewal of registration, of a trademark shall be for a term of no
less than seven years. The registration of a trademark shall be renewable indefinitely.

Article19
Requirement of Use

1. If use is required to maintain a registration, the registration may be cancelled only after an
uninterrupted period of at least three years of non-use, unless valid reasons based on the
existence of obstacles to such use are shown by the trademark owner. Circumstances arising
independently of the will of the owner of the trademark which constitute an obstacle to the
use of the trademark, such as import restrictions on or other government requirements for
goods or services protected by the trademark, shall be recognized as valid reasons for non-
use.

2. When subject to the control of its owner, use of a trademark by another person shall be
recognized as use of the trademark for the purpose of maintaining the registration.

Article20
Other Requirements

  The use of a trademark in the course of trade shall not be unjustifiably encumbered by
special requirements, such as use with another trademark, use in a special form or use in a
manner detrimental to its capability to distinguish the goods or services of one undertaking
from those of other undertakings. This will not preclude a requirement prescribing the use of
the trademark identifying the undertaking producing the goods or services along with, but

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without linking it to, the trademark distinguishing the specific goods or services in question
of that undertaking.

REMEDIES

Registration of a trade mark confers the following rights on the registered proprietor:-

 The exclusive right to use the trade mark in relation to the goods or services in respect
of which the mark is registered.
 The right to obtain relief in respect of infringement of the trade mark.

There are two types of remedies are available to the owner of a trademark for unauthorized
use of its trade mark by a third party i.e. an action for passing off in the case of an
unregistered trademark and an action for infringement in case of a registered trademark. An
infringement action is a statutory remedy and an action for passing off is a common law
remedy.

Infringement
Trademark infringement is a violation of the exclusive rights attaching to a registered
trademark without the authorization of the trademark owner or licensee. Infringement may
occur when the infringer, uses a trademark which is identical or confusingly similar to a
registered trademark owned by another person, in relation to products or services which are
identical or similar to the products or services which the registration covers. The owner of
such registered trademark may commence legal proceedings against the infringer.

Passing Off
It takes place in the event of unregistered Brand Names. The owner or the Brand holder owns
the preferred right over the Brand due to the long and uninterrupted usagealthough the Brand
being unregistered under the Act, a legal action for the violation cannot be instituted. A
Passing Off action is supposed to be initiated by the actual owner or user of a Brand against
any other person, who in the course of trade, deceives its potentialconsumers about its goods
or services in a way so as to show that they are linked to the goods or services of the original
owner and this is done in a deliberateand intended manner to harm the reputation of business
or goodwill of the original owner or to earn benefit at the instance of the original owner. For
the claim of relief it is also crucial that the actual deception and actual damage needs to be

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proved. It has been settled in plethora of judgments that essential characteristics of a passing
off action are as follows:

 Misrepresentation/ deception
 Made by someone in the course of Trade Mark
 To the potential consumers or ultimate consumers of goods or services supplied by
him
 Which is intended to affect the business or goodwill of another trade adversely
 Which results the actual injury to a business or goodwill of the trade by whom, the
action is brought or will probably be brought so.

Jurisdiction
One of the most crucial practical advantagementioned under Section 134 of the Trade Marks
Act, 1999 is that a suit for infringement can be instituted before a District Court as well as a
High Court ( which enjoys Ordinary Original Civil jurisdiction i.e. High Court of New Delhi,
Mumbai, Kolkata or Chennai), within the local limits of whose jurisdiction, at the time of the
institution of the suit, the person instituting the suit, actually and voluntarily resides or carries
on business or personally works for gain.

The person consists of the registered proprietor or the registered user. On the contrary, the
suit for passing off can only be instituted before a District Court, within the local limits of
whose jurisdiction the defendant is residing, works for gain or is carrying on his business or
where the cause of action arose.

Remedies

A criminal complaint can also be filed at the instance ofviolation or passing off trademark.
The Courts of appropriate jurisdiction can impose injunction on the violator and direct the
authorities of custom to put a hold on the shipment and supply of the violatinggoodsor
prevent its clearance in anyway possible, to safeguard the interest of the holders or owners of
IPR i.e. intellectual property rights. This legal proposition can be obligated with or without
indulging the concerned authorities as a party to the suit.

The remedy which a court of law may commonly give in a suit for passing off or
infringement of trademark comprisesboth permanent as well as interim injunction, account of

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profits or damages, delivery of the violating goods for destruction and cost of the legal
proceedings. The interim injunction order may be passed after notice or ex parte. The Interim
reliefs in the suit may also consist of order for:

(a) Local commissioner appointment, for search and seizure and preservation of infringing
goods, account books and preparation of inventory, etc.

(b) Preventing the infringer from clearing of or dealing with the goods in a way which may
affect plaintiff's ability to recover damages adversely, costs or other fiscal (pecuniary)
remedies which may be eventually awarded to the plaintiff.

BIBLIOGRAPHY

1. (Indian) Trade Marks Act, 1999 (repealing the erstwhile Trade and Merchandise Marks
Act, 1958, in turn, repealing the Trade Marks Act, 1940); the Trade Marks Rules, 2002 (as
adopted and amended time to time, and repealing the erstwhile the Trade and Merchandise
Marks rules, 1959).

2. Trade Related Intellectual Properties (TRIPS) Agreement 1994 (as regards Trade Marks)

3. Paris Convention for the Protection of Industrial Property (PIP), 1883 (as regards the Trade
marks) (last amended 1976), Stockholm) [member India since 1998]

4. The Nice Agreement concerning the International Classification of Goods and Services for
the Registration of Marks, 1957

5. The Vienna Agreement Established on International Classification of the Figurative

Elements of Marks, 1973

6. Madrid Agreement Concerning the International Registration of Marks, 1979; Protocol,

1989 relating to that Agreement

7. Common Regulations under the Madrid Agreement concerning the International

Registration of Marks and the Protocol relating to that Agreement, 1998

8. Trade Related Intellectual Properties (TRIPS) Agreement 1994

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